www.jeremydebeer.ca

Today the Supreme Court of Canada released its long-awaited decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, which upheld Sanofi's "selection patent" over the anti-coagulant marketed as Plavix. A selection patent is basically a patent for a particular part of an already-patented invention. They're widely used in the chemical and pharmaceutical industries, and have huge importance in ongoing battles between generic and research-based pharmaceutical companies.

The objection put forward to this kind of patent is the putative inventor hasn't actually done anything new or inventive. In patent lingo, that would mean that the claimed invention has already been anticipated by an earlier invention, or that the earlier invention renders the latter one obvious. Either finding would make the selection patent invalid.

More fundamentally, because the specific selected invention (usually a chemical compound) was already a claimed generally as part of a broader genus of compounds, opponents of selection patents would argue that the patentee is double-dipping into the patent system. In effect, the selected compounded is protected both by the first (originating) patent and the second (selection) patent. A patentee can use the strategy of selection patents to "evergreen" their protection; that is, extend the duration of their effective monopoly over the invention and all of its components.

The Supreme Court rejected those objections in principle, saying there's nothing per se problematic about selection patents. Technically, the selection patent claims something different (presumably better) than the originating patent. And on the facts of this particular case, originating patent did not disclose or enable the selection patent, nor did it make the selection patent obvious. So even though Sanofi's originating patent expired in 2002, the drug maker is protected until its selection patent expires in 2012.

The broader, practical implication of this decision is that it will likely delay the introduction of other generic drugs. That will probably make medicine more expensive, because there's less competition for a longer period of time. Of course, more expensive medicines mean more incentives for pharma companies to invest in new research and drug development -- that's the whole point of a patent system. The million dollar question is whether the benefits outweigh the costs. I wish I knew the answer.